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August 24, 2016 Articles

Four Factors to Consider Before Trademarking a Hashtag

By Christi Schofield

Social media hashtags have transformed how businesses and consumers interact. For example, you might have recently seen Red Bull promoting #PutACanOnIt, which encourages social media users to post pictures of Red Bull cans placed in unique positions. Hashtags like this one allow consumers to communicate with companies directly regarding when, where, how, and why they use their products. On the other hand, hashtags also help companies track the evolution of their brands, promote products, and engage directly with consumers online.  

The U.S. Patent and Trademark Office (USPTO) defines a hashtag as a form of metadata consisting of a word or phrase prefixed with the symbol “#” (e.g., #chicago, #sewing, and #supremecourtdecisions). See Trademark Manual of Examining Procedure § 1202.18 (Apr. 2016). Social media platforms, such as Twitter, Facebook, Instagram, and Vine, use hashtags to group content together by topic. Social media users then access a particular topic by clicking on or searching for hashtags linked to the content.  

Accordingly, hashtags are a hot topic in the context of trademark law because anyone on social media can use them. Although brands want consumers to post Instagram photos and “tweet” about their products using a particular word or phrase, they do not want their competitors to use the same terminology. This triggers the need for trademarks. 

Thus, over the past few years, there has been a major push by companies to trademark hashtags, especially in the United States. In 2015, 1,398 trademark applications for hashtags were filed in the world—1,042 of those applications were filed in the United States. Saqib Shah, “Research Reveals Increasing Number of Brands Are Trademarking Social Media Hashtags,” Digital Trends (Apr. 1, 2016). Compare this to 2010, when just seven hashtag trademark applications were filed in the United States. Sally French, “Here’s One More Way the World Is Trying to Infiltrate Social Media,” MarketWatch, Mar. 23, 2016. However, depending on a company’s resources and the hashtag sought to be trademarked, trademarking a hashtag is not always prudent. To determine whether you should trademark a hashtag, consider the following four factors. 

1. Some Hashtags Are Not Registrable
Merely adding a hashtag before a word or phrase does not make it registrable as a trademark. The first rule of thumb is that a word that includes the hashtag symbol “#” is only registrable if it identifies the source of the trademark owner’s goods or services. See Trademark Manual of Examining Procedure §§ 1202.18, 1209.01(c). A hashtag is not registrable if it is merely descriptive or generic for the goods or services in connection with which it is being used.  

To illustrate this difference, consider what would happen if Company X, a skateboarding equipment company, attempted to trademark the word #Skater. This word merely describes all people who skate (skateboarders, roller skaters, ice skaters, etc.) and lacks any connection to Company X. Thus, #Skater is not registrable. See id. § 1202.18 (stating “#SKATER for skateboarding equipment is merely descriptive.”). In contrast, consider if Company X attempted to trademark #CoXSkaters. This would likely be registrable because it identifies skaters who are specifically promoting Company X.  

The second rule of thumb is that hashtags must be used beyond the context of social media. Generally, a hashtag is not registrable if the company uses it exclusively on social media to facilitate searching for its brand. Examining attorneys who grant and deny trademark applications are instructed to determine whether the trademark requested will be used in connection with goods or services unrelated to social networking. This prevents companies from gaining intellectual property rights over every word they use to market their goods and services online.  

For example, the USPTO permitted Mucinex to trademark #BLAMEMUCUS because, in addition to tweeting this hashtag, it promoted this hashtag on its in-store displays and television commercials. Similarly, Coca-Cola recently submitted an application to trademark #SMILEWITHACOKE, which it currently displays on its cans and bottles. Compare these examples with the holding in Eksouzian v. Albanese, No. CV 13-00728-PSG-MAN, 2015 WL 4720478, at *8 (C.D. Cal. Aug. 7, 2015), in which a federal district court determined that a company could not trademark #cloudpen because, among other things, it used this hashtag only to promote the location of its products online.  

Accordingly, before applying for a trademark, it is important to consider whether the company uses the hashtag only online. If so, the company might want to consider adding the hashtag to its packaging, print advertisements, and in-store displays before filing an application with the USPTO. 

2. Trademark Owners Must Be Capable of and Committed to Protecting Their Trademark
Although the USPTO is responsible for reviewing and registering trademarks, it does not monitor or police them. This means that owners—alone—are responsible for detecting and protecting their trademarks against violations. While protecting a trademark can be costly, doing so can benefit companies for several reasons.  

First, protecting a trademark maintains its exclusivity. When unchallenged third parties repeatedly use a trademark to describe goods and services other than those it is registered to describe, the strength of the mark weakens, decreasing the effectiveness of the trademark. In addition, once a trademark loses its exclusivity, its owner can lose rights to that trademark. For example, earlier this year, Apple lost the exclusive right to use the name “iPhone” in China because it could not prove that it was better known than a Chinese-based brand of leather products called IPHONE.  

In the United States, courts consider the extent to which owners protect their trademarks in evaluating trademark infringement claims and in determining whether to grant protective orders. In Gucci America, Inc. v. Guess?, Inc., 868 F. Supp. 2d 207, 222 (S.D.N.Y. 2012), Gucci brought several trademark infringement claims against Guess? after it allegedly copied a trademarked diamond pattern. The court denied Gucci’s claims, canceled its trademark, and emphasized that Gucci should have detected the fraud earlier. In fact, Gucci and Guess? advertised products with the allegedly similar diamond pattern side by side in the same malls and in the same magazines.  

To prevent falling in Apple’s and Gucci’s footsteps, all companies should have a monitoring system in place to track trademark violations. Trademarks can be monitored by in-house teams, outside law firms, or by third-party vendors. A company should choose a monitoring system based on its size, resources, and policing goals. For instance, if a company has a strong presence on social media but does not have the employees or finances to monitor its brand internally, it should consider hiring a third-party vendor. Thomson Reuters offers a program called MarkMonitor that monitors brands on social media to detect trademark violations. Similarly, Brandwatch Analytics offers a program called Brandwatch Vizia, which tracks brands online against their competitors and identifies abuse on all social media platforms. These two programs can also work with companies to report violations to Twitter, Facebook, and Instagram.  

3. Trademarking a Hashtag Does Not Mean Others Cannot Use It
As is true of other trademarks, trademarking a hashtag does not prevent others from using it. Generally, social media users are permitted to use a trademarked hashtag so long as they do not cause confusion about the goods or services protected by the trademark. This is an important factor to consider before spending the resources to trademark a hashtag because a trademark will not give an owner legal recourse against everyone who uses the hashtag in a way that the owner disagrees with. Rather, the purpose of trademarking a hashtag is to protect companies from competitors on social media.  

4. Some Courts Have Not Afforded Hashtags Legal Trademark Protection
The key to succeeding on a trademark infringement claim is proving that someone’s use of your trademark is deceptive and that your trademark is not merely descriptive. While one court has held that using a hashtag can be deceptive, another has held that hashtags are merely descriptive.  

In March 2015, clothing maker Fraternity Collection brought trademark infringement claims in federal district court against a former designer for using the hashtags #fratcollection and #fraternitycollection on social media. See Fraternity Collection, LLC v. Fargnoli, No. 3:13-CV-664-CWR-FKB, 2015 WL 1486375, at *1 (S.D. Miss. Mar. 31, 2015). In denying the designer’s motion to dismiss, the court accepted the notion that “hashtagging a competitor’s name or product in social media posts could, in certain circumstances, deceive consumers.” Id. at *4. Thus, the court implied that trademarked hashtags could possibly be afforded legal protection.  

Five months later, another federal district court decided whether a party was permitted to post #cloudpen on Instagram. See Eksouzian, 2015 WL 4720478, at *8. In contrast to the Fraternity Collection court, the Eksouzian court stated that “hashtags are merely descriptive devices.” See id. The court held that all of the parties could use the hashtag on Instagram because the hashtag was “merely a functional tool [and] not an actual trademark.” See id. Despite the fact that Eksouzian remains one of the foundational hashtag trademark cases, it is somewhat at odds with actual USPTO practice. In the same week that Eksouzian was decided, seven new hashtags were granted federal registration by the USPTO, including KFC’s #HowDoYouKFC, Vanity Fair’s #VFSocialClub, Glade’s #BestFeelings, and Volvo’s #SwedeSpeak. Alexandra Roberts, “Hashtags Are Not Trademarks—Eksouzian v. Albanese,” Technology & Marketing Law Blog (Aug. 26, 2015). 

Given that there is some uncertainty in this area of developing law, it is important to understand that approval of your application by the USPTO and effectively policing of your trademarked hashtag do not mean that you are guaranteed legal protection. At least, not yet. 

In summary, can you trademark a hashtag? Yes. Will trademarking a hashtag prevent everyone on social media from using it? No. Should you trademark your hashtag? It depends. While hashtags are excellent online marketing tools, trademarking a hashtag and maintaining that trademark can be a long and difficult process. Therefore, it is recommended that all companies meet with an experienced trademark attorney to determine whether trademarking a hashtag is a good business. 

Keywords: litigation, minorities, trademark, hashtag 

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